Tag Archives: attorneys’ fees

By Tyler J. Fortner and David G. Barker On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark Office’s (“USPTO’s”) refusal to issue a patent. Under 35 U.S.C. § 145, the USPTO requests attorneys’ fees as expenses when applicants seek review of a denied patent application in district court, regardless of whether the applicant wins or loses. The en banc Federal Circuit held here that applicants seeking review in district court are not required to Read More»

On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). Section 35(a) of the Lanham Act provides that “he court in exceptional cases may award reasonable attorney fees to the prevailing party.” In determining whether a case is “exceptional,” courts in the Ninth Circuit are now required to apply a less “precise rule or formula,” and look to Read More»

In Octane Fitness v. ICON Health & Fitness (2014), the Supreme Court changed the standard for recovering attorneys’ fees in patent litigation. Rejecting a “rigid and mechanical formulation,” the Court adopted a looser “totality of the circumstances” test. Earlier this year, a Ninth Circuit panel held that the Octane Fitness standard did not apply in trademark cases. But now the Ninth Circuit has ordered an en banc rehearing of the panel’s decision. In SunEarth, Inc. v. Sun Earth Solar Power Co., the district court permanently enjoined Sun Earth Solar Power from using “Sun Earth” in the U.S. because that use Read More»

Supap Kirtsaeng realized he could buy cheaper, identical textbooks in Thailand and resell them for a profit in the U.S. John Wiley & Sons, the publisher of some of these textbooks, sued him for copyright infringement. Kirtsaeng prevailed on his fair use defense, but the court denied him attorney’s fees under § 505 of the Copyright Act, because Wiley’s claim was not “objectively unreasonable.” Kirtsaeng appealed to the Supreme Court. A unanimous Court agreed with Wiley that this was not the kind of “objectively unreasonable” case that warranted attorney’s fees, particularly because the fair use issue resulted in a previous Read More»

The Patent Act provides, in 35 U.S.C. § 285, that “he court in exceptional cases may award reasonable attorney fees to the prevailing party.” In 2005, and the Federal Circuit restrictively interpreted the statute in Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., holding that a case is “exceptional” only where (1) “there has been some material inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation . . . or like infractions,” or (2) the litigation was brought in bad faith and Read More»